53 for 58: Another Oracle win over Clouding IP

In yet another petition against Clouding IP, Oracle was successful in getting all thirteen challenged claims of a Clouding IP patent into inter partes review trial in a case styled as Oracle Corp. v. Clouding IP, LLC Inc. (IPR2013-00075), involving U.S. Pat. No. 6,925,481.

The ’481 patent relates to pervasive computing, and more specifically describes methods, systems, and instructions for enabling users of pervasive devices (i.e., mobile devices, smart appliances, etc.) to remotely access and manipulate information in ways that may go beyond the inherent limitations of the device. The idea behind this was to allow users to have “anywhere, anytime” access to desirable services like voice and data communications.

The Board began with a findings of fact, outlining the content of importance in the main reference that Patent Challenger cited in the allegations of unpatentability. Then, the Board turned to fairly in-depth claim construction analysis, where it began with the phrase, “receiving a data access request.”  The Board rejected Patent Owner’s  interpretation that the steps of the claimed method must occur only in response to data access request required by the claim.  The Board deemed this interpretation too narrow because: 1) the claim was open-ended (including the transitional “comprising” phrase), and thus was not limited to only one type of data access request; 2) language from other claims confirmed that other data requests could occur; and 3) the specification did not indicate that other data requests could occur.  Next, the Board evaluated the meaning of, “location of each data manipulation operation.” Finding no meaningful difference between the proposed constructions from Patent Owner and Patent Challenger, the Board adopted an interpretation that was the similar to both, but more precise. Finally, the Board needed only to rely upon a specific definition of the term “data” from the specification.

Then the Board moved on to an analysis of the alleged grounds of unpatentability. Patent Challenger alleged the challenged claims were obvious over four combinations of prior art references, and also anticipated by one prior art reference that was also cited in an obviousness challenge. As to the anticipation grounds, the Board granted Patent Challenger’s petition, finding that Patent Owner’s arguments for patentability over the prior art were either misplaced or dependent on claim construction that was narrower than the Board’s claim construction. Then, the Board considered the obviousness challenges. After granting the petition as to one of the challenged claims over a set of prior art references, the Board declined to consider obviousness over the other three combinations of prior art references, stating that the alleged grounds of unpatentability were redundant.

In summary, the Board granted trial for all thirteen challenged claims of the ‘481 patent based primarily on anticipation grounds, but also a single ground relating to obviousness of one challenged claim.

*As we continue to get caught up on past decisions (in between billable hours), we note that the battle between Oracle and Clouding IP has been settled, with all 17 IPR proceedings having been terminated by joint stipulation and the filing of a settlement agreement.